C-64/02P

The Office for Harmonisation in the Internal Market (Trade Marks & Designs) v Erpo Möbelwerke GmbH

An appeal against the judgment delivered on 11 December 2001 by the Fourth Chamber of the Court of First Instance of the European Communities in Case T-138/00 between Erpo Möbelwerke GmbH and the Office for Harmonization in the Internal Market (Trade Marks and Designs) was brought before the Court of Justice of the European Communities on 27 February 2002 by the Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by Alexander von Mühlendahl, Vice-President of the Office, and George Schneider, member of the Legal Services and Court Proceedings Unit of the Legal Department.

The appellant claims that the Court should:

• set aside the contested judgment;
• dismiss the action against the decision of the Third Board of Appeal of 23 March 200 in case R 392/1999-3, or alternatively refer the proceedings back to the Court of First Instance;
• order the other party to the proceedings to pay the costs both of the proceedings at first instance and of the appeal proceedings.

Pleas in law and main arguments

Infringement of Article 7(1)(b) of Council Regulation No 40/94: the Court of First Instance applied a new examination criterion in the contested judgment. The Office considers that to limit the possibility of refusing a trade mark application to cases in which general use amongst the class of persons concerned is proved constitutes a legally erroneous interpretation of Article 7(1)(b). If it were possible to refuse an application for a trade mark only if that mark, or at all events signs portrayed in the same way, were shown to be already customary in business circles, Article 7(1)(b) would be robbed of its central meaning for the purposes of examination of trade mark applications and, moreover, the examination would overlap with Article 7(1)(d).